Patents: Gene patents safe down under

12 December 2011

The Australian government has rejected a ban on gene patents, but proposed adding an ethical test to the Patents Act that could cause IP owners some headaches. In its response to three enquiries into aspects of its patent system – the Senate Community Affairs Committee inquiry into gene patents, the Advisory Council on Intellectual Property (ACIP) review of patentable subject matter and an Australian Law Reform Commission (ALRC) report on gene patenting and human health – Kim Carr, the minister for innovation, acknowledged concern over gene patents, but said that a ban was not the answer. “We need the incentives provided by the patent system to encourage the development of new technologies. But this government will not allow patent owners to block reasonable access to affordable medical treatments and essential diagnostic tests, nor to stifle legitimate research,” he said.

Gene patents have long been a controversial topic in Australia. As in the US, the debate in recent years has focused on Myriad Technologies and its patents covering the BRCA1 and BRCA2 genes. In September this year, a Senate Committee majority report recommended that two bills that would ban gene patents and other biological materials should not be passed.

EU

SPCs clarified. The Court of Justice of the EU delivered a mixed ruling on supplementary protection certificates (SPCs) in the Medeva and Georgetown cases in November. The court said that if an applicant for an SPC holds a patent for A, and a market authorisation for A+B, it can receive SPC protection for A covering it in all authorised medicinal products. The ruling was less positive with respect to an SPC for A+B, however.

Australia

Samsung overturns Apple injunction. The Full Federal Court of Australia in November overturned an interim injunction banning the sale of Samsung’s Galaxy Tab 10.1 tablet computer. In a 48-page decision, the Full Court found that Apple did not establish a prima facie case for infringement of either of the two patents at issue and that Judge Annabelle Bennett incorrectly assessed the balance of convenience when deciding to grant an injunction.

China

Patent applicants to get Chinese translations. Inventors and patent applicants will be able to use a free automatic translation service to access patents filed at the Chinese patent office as a result of a deal between the EPO and SIPO. Automatic Chinese-English machine translation tools for patents will be available to the public from next year. The EPO said the deal is particularly important given the growing number of patent applications originating from China.

US

Pfizer reaches patent cliff. Pfizer is the latest to see a leading drug patent expire with the introduction of Lipitor generics in November, and now senators have expressed concern about its plans to limit sales of Lipitor generic atorvastatin. “We are concerned that the [pharmaceutical benefit management companies] PBMs may charge health plan sponsors…full price for brand name Lipitor...while pocketing the discount from Pfizer,” they said.

Oliver Varhelyi, head of the industrial property unit at the European Commission, is leaving his post to work at the Hungarian permanent representation to the EU.

A majority of the Federal Circuit denied a request for rehearing en banc in Retractable Technologies v Becton Dickinson & Company, leaving uncertainty about the proper standard of review for claim construction decisions from district courts.

The US Congress agreed to fund the USPTO at its requested level of $2.7 billion for fiscal year 2012, a 28% increase on 2011.

Microsoft entered its 10th licensing agreement with Compal, meaning it now has patent deals with more than half of Android vendors.

The Finnish IP office announced that it now accepts patent applications drafted in English as well as Finnish and Swedish.

The USPTO is asking for comments on potential locations for the two additional satellite offices it must launch, and announced that the Detroit office is scheduled to open in the second half of 2012.

The patent offices of Iceland and China are the latest to enter Patent Prosecution Highway programmes with the USPTO.